We use cookies to customise content for your subscription and for analytics.If you continue to browse Lexology, we will assume that you are happy to receive all our cookies. For further information please read our Cookie Policy.

European trade mark reform

The Community Trade Mark Regulation and EU Trade Mark Directive reforms were finally approved at the end of 2015. The changes, which start coming into force in March 2016, are wide-ranging. Our top ten points are below.

From 23 March 2016, the Office for Harmonization in the Internal Market is re-named the European Union Intellectual Property Office and Community Trade Marks become European Union Trade Marks (EUTMs).

The first raft of changes affecting EUTMs will take effect from 23 March 2016. But Member States will have until 14 January 2019 to implement secondary legislation to apply these changes to national trade marks. This means that EUTM and national trade mark owners’ rights will be different during this period.

Trade mark applicants will no longer need to represent marks graphically. This will make it easier for businesses to register non-traditional marks, like sounds, smells, motions and holograms. Applicants will be able to represent a sign in any appropriate form, as long as registries and the public can clearly determine what is protected.

Trade mark owners will have an express right to take action against counterfeit goods transiting through the EU(although importers will have a defence to infringement if they can prove that the trade mark owner is not entitled to prevent sale in the country of final destination). Trade mark owners will also be able to prevent the sale, stocking and import/export of counterfeit labels, tags or other materials. EUTM owners will benefit from this additional protection from March, but those with only national registrations will have to wait. If counterfeit goods are an issue and you don’t have an EUTM, then you should consider registering one.

The owner of an earlier trade mark will no longer be able to prohibit the use of a later registered trade mark through infringement proceedings, unless the later trade mark is invalidated. This defence, for the owner of a later (or earlier) trade mark, was previously available under UK law until the ECJ’s decision in Fédération Cynologique (which held that a later registration could not be a defence to infringement proceedings) - the reforms overrule that decision. The practical effect is that it will now take longer to get injunctive relief in priority disputes.

Licensees’ rights to sue third parties for infringement of national marks will be harmonised with the EUTM rules.Licensees will be able to sue with the trade mark owner’s consent, although exclusive licensees will have extra rights if the trade mark owner fails to act. This is the first time that licensees’ rights under national marks have been harmonised across the EU, and is important for trade mark owners with international licensing regimes. If you’re refreshing your IP licences, consider whether you want to limit the licensee’s rights by contract, to the extent possible.

In line with the current rules under the CTM regulation, the changes confirm that the sale of an undertaking as a whole will include the transfer of any national trade marks unless the parties agree, or the circumstances require, otherwise. They also confirm that national marks can be given as security.

The changes confirm that the owner of an EUTM or a national trade mark can prevent a third party using a sign incomparative advertising in a way that breaches the EU comparative advertising directive.

The changes confirm that using a sign as a trade mark or company name can infringe a mark. The honest use of a natural person’s own name, but not a company name, can be a defence to infringement.

The defence of making a ‘referential use’ is expanded. Third parties will be able (honestly) to use other’s marks to identify goods or services as those of the trade mark owner. This might include honest use of a mark for the resale of genuine goods, to put forward a legitimate alternative product or for parody.

Compare jurisdictions: Arbitration

“The new ACC Newsstand is one of the best e-resources that I have encountered in 21 years of practicing Employment Law. The information is timely, helpful and easy to navigate. Thank you for offering it and please continue it indefinitely!!”